This is bad and wrong in so many ways. For the record.
ParkPlus patent dispute heats up between Calgary Parking Authority and former GM
BY LAURA STONE AND DON BRAID, CALGARY HERALDMAY 20, 2011 6:42 PM
Newly terminated Calgary Parking Authority managers Dale Fraser and Al Bazar had listed themselves as inventors on a U.S. patent for a system for managing parking rights — casting the city’s foreign rights to the automated ParkPlus in doubt.
Records show Fraser and Bazar’s U.S. patenting application process began on Jan. 15, 2010, and is still underway. However, they applied for a PCT number, which is the worldwide patent code, in July 2007.
City solicitor Paul Tolley confirmed the city is in a prolonged legal dispute over ownership rights to ParkPlus with the former top executives, who were fired Thursday by the parking authority board.
Such rights could mean big money to even partial owners of the unique cellphone system now used in Calgary and on a trial phase in Whistler, B.C.
“This has been the subject of some discussion at (parking authority) board meetings about trying to resolve the claims,” Tolley told the Herald.
“I know that their names are on it with the Canadian patent office as inventors, but my understanding on that one is that the City of Calgary has gone forward and filed with the patent office.”
When reached on Friday, Bazar would not comment on the U.S. patenting rights to ParkPlus but said he and Fraser have been “entirely co-operative” with the city.
“Mr. Fraser or myself have never been in a position of conflict with the city. It’s never been our intent to be in conflict with them. We’ve always been very open and very interested in co-operating with the city. And that’s really all I can say,” said Bazar.
“I’ve been terminated without cause, so I don’t have any comment.”
Bazar added that it’s “too early to say” whether he will seek legal action against his former employer.
Ald. Dale Hodges said the parking authority board acted to terminate the contracts of Fraser and Bazar, who were the authority’s general manager and manager of enforcement, partly because “of this lawsuit they threatened the city with in a letter from their lawyer.”
“The city made them an offer to drop the idea of coming after the city for whatever they thought their invention or creation might be worth,” said Hodges, one of two aldermen on the parking authority board.
“They never did drop the idea, in spite of the city making them a reasonable offer to do so.”
Asked if city employees should enjoy ownership of their work, Hodges said “my opinion is they got the wrong advice from someone. They were working for the city. It was public money put into establishing it as a system. They didn’t put their money into it as far as I know.”
While the city or the parking authority can register a patent in Canada in their own names, in the U.S., patents are registered under inventors.
“There’s going to be an issue, in fact there already is, as to whether Mr. Fraser and Mr. Bazar have a claim on the U.S. side of the patent business, or not at all,” said Hodges.
“That will be something that’s hopefully sorted out in the settlement with them.”
Ald. Gael MacLeod, who sits on the parking authority board, said the former managers will receive “a complete settlement,” but would not elaborate.
She also denied Fraser and Bazar were fired because of a conflict over the U.S. patent rights.
“No, the overarching issue was customer service,” she said.
Mayor Naheed Nenshi would not wade into the issue of whether Fraser and Bazar were terminated because of the issue over rights to ParkPlus.
“I can’t comment too much on a wide human resources issue. I don’t think that would be fair to anyone,” said Nenshi.
“But I will say that when you make a change in the very top of an organization like that, there are a number of things you need to unwind and certainly the ward and the management of the parking authority are aware of the situation,” he said.
Hodges said a patent lawyer in Montreal or Ottawa is likely reviewing the file.
According to representatives from the United States Patent and Trademark Office, Fraser and Bazar are listed as inventors, but in January of this year, ownership rights were assigned to the City of Calgary.
But Calgary patent agent and lawyer Doak Horne said such assignments require a “consideration” — which means a benefit or fee, no matter how small, must be paid to the inventors in exchange for the worldwide rights.
“The law of contracts says there has to be some consideration given,” he said.
A detailed application for assignment was not immediately available.
A U.S. representative said patents typically take between 18 and 27 months for approval, but Horne said they can be delayed.